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Sannah Westerlund — 19/08/21

One.com loses UDRP against the owner of 0ne.com

In early April, the news came that the hosting company one.com had lost a UDRP (Uniform Domain-Name Dispute-Resolution Policy) against the owner of 0ne.com – a dispute about the domain name starting with the digit 0 (zero) instead of the letter o. The decision shows the importance of all three requirements really being fulfilled if you want to be successful in litigation, despite trademark registration and likelihood of confusion.

The owner of 0ne.com (who is also a crypto-currency investor) acquired the domain name in question for $2,305 in a DropCatch auction in the summer of 2020 and claims that he bought the domain name because the Ethereum wallet address starts with the digit 0.

Even though the arbitral tribunal in part agreed that the domain name in question is confusable with the trademark One.com, the tribunal found the owner to have a legitimate interest in the domain, and that the plaintiff had not presented enough evidence to support bad faith.

The verdict shows the importance of all three requirements being fulfilled in litigations (read more about these here!). This places a demand on trademark owners not to take for granted that disputes regarding domain names that are open for third party registrations cannot always be solved through litigation. It is important to highlight this perspective in your digital name protection strategy.

The case is also interesting as it deals with the limitations of a trademark based on a generic digit or word. Below is an excerpt from the verdict, dealing with the main reason behind the decision.

”No-one can own a number or dictionary word to the exclusion of the rest of the world. They are inherently lacking in the distinctiveness required for trade mark law. Trade marks are badges of origin that enable the public to identify the goods and services of a trader so they can make a repeat purchase safe in the knowledge that the quality should be the same the second time around. An ordinary word or number cannot function in that way for obvious reasons. That is, unless they have what we call “acquired distinctiveness” or secondary meaning so that they are so famous that it is the brand that the relevant public bring to mind and not the dictionary term. That is not really possible with a number or a common word –so that in their original meaning, they remain the property of and available to, all. This forms the basis of the prohibition on descriptive and generic marks which recognises that many traders want to use descriptive terms for their informational values and that no one trader should be able to monopolise them. Those selecting such terms as marks have to tolerate confusion and the Policy reflects this by protecting such as fair or legitimate use. Furthermore, consumers are not easily confused by such terms as they understand they are common ordinary terms, employed by many undertakings, with a low degree of distinctiveness.”

 By monitoring how your brand is used in domain registrations, you can quickly get information when questionable registrations occur. It is always individual which route is the best to take, there is not always a “quick fix”. If an early assessment is not made about this, there is a risk of both unnecessary costs and also of deteriorating one’s position in a potential dispute.

You can read the entire verdict here: https://udrp.adr.eu/adr/decisions/decision.php?dispute_id=103567